To: | Freedom Awaits, LLC (legalines1@aol.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77589199 - DRS - N/A |
Sent: | 7/15/2009 7:36:01 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/589199
MARK: DRS
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Freedom Awaits, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 7/15/2009
This Office action is in response to applicant’s communication filed on June 24, 2009.
The requirement for additional information about the significance of the proposed mark has been satisfied. However, upon review of the applicant’s response, the following new issues must be raised regarding the descriptiveness of the proposed mark and the applicant’s claim of acquired distinctiveness. In addition, the requirement for an acceptable specimen of use is maintained and continued.
1) Trademark Act Section 2(e)(1) Refusal:
The applicant has applied to register DRS, in standard character form, for use on or in connection with a medical device, namely a table containing a harness for use in decompression, reduction, and stabilization of the intervetebral discs in the spine.
The applicant has stated that the proposed mark “means or signifies [d]ecompression reduction and stabilization” in the applicant’s trade or industry. As made clear by the identification of goods, the use of the applicant’s goods is “decompression, reduction, and stabilization” of discs. Accordingly, the acronym DRS is merely descriptive for the use of the goods and registration must be refused under Section 2(e)(1).
Seeking Registration On The Supplemental Register:
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
2) Claim Of Acquired Distinctiveness:
The applicant has entered a claim of acquired distinctiveness based upon length of use of the proposed mark, specifically, the five years preceding the claim. However, the dates of use indicate that the proposed mark has been in use in commerce for less than three years. For a claim of acquired distinctiveness based upon length of use of the mark, “[i]t must be clear from the record that the five years of use has been in commerce that may lawfully be regulated by Congress.” TMEP §1212.05(d)(3). In this case, the application record contains an inconsistency, accordingly, the claim of acquired distinctiveness cannot be accepted and entered into the record.
3) Specimen Of Use:
The requirement that the applicant submit an acceptable specimen of use is maintained and continued.
The substitute specimen is not acceptable because it appears temporary in nature. See TMEP §904.03(a). Trademark Act Section 45 requires use “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1).
An application based on Section 1(a) must include a specimen showing the applied-for mark in actual use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Therefore, the applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a substitute specimen requires an amendment to the dates of use, the applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
If the applicant cannot satisfy the above requirements, the applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if the applicant amends the basis to Section 1(b), registration will not be granted until the applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Martha L. Fromm/
Martha L. Fromm
Trademark Attorney
Law Office 106
Phone: (571) 272-9320
Fax: (571) 273-9106 (formal responses)
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.